Appeal 2006-2320
Application 10/061,830
a claim with properly referring to the specification to determine the meaning
of a particular word or phrase in a claim. [Citations omitted.]” Donaldson,
16 F.3d at 1195, 29 USPQ2d at 1850; see also Morris, 127 F.3d 1048, 1055-
56, 44 USPQ2d 1023, 1028 (explaining Donaldson).
Thus, the Examiner must first interpret the “means for” claim
language in order to establish a prima facie case of anticipation and of
obviousness over the applied prior art because all of the claim limitations
must be considered. See, e.g., In re Geerdes, 491 F.2d 1260, 1262-63,
180 USPQ 789, 791-92 (CCPA 1974) (In considering grounds of rejection
“every limitation in the claim must be given effect rather than considering
one in isolation from the others.”); cf. Donaldson, 16 F.3d at 1195-97,
29 USPQ2d at 1850-52.
Here, the Examiner has not interpreted the “means” language in
appealed claims 8, 9, and 20 with respect to the “corresponding structure” in
the Specification and “equivalents” thereof in a manner consistent with the
requirements of 35 U. S. C. § 112, sixth paragraph (Answer 4-6 and 8).
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to interpret the
“means” limitations of appealed claims 8, 9, and 20 by first determining the
Acorresponding structure@ for the Afunction@ in the limitation that is described
in the Specification in a manner consistent with the requirements of 35 U.S.C.
§ 112, sixth paragraph, then determining whether the corresponding structure or
Aequivalents@ thereof are taught or suggested by the applied prior art, and if so,
setting forth the interpretations, findings, and determinations in a supplemental
- 5 -
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007